29 August 2003

Watch Out For That Treeeeeeeee
Kerthunk. Yet again, Tarzan triumphs over the jungle of work for hire in the Second Circuit. Maybe it wasn't Spidey who was swinging between the buildings…

   All seriousness aside, the estate of Edgar Rice Burroughs (in the form of Edgar Rice Burroughs, Inc.) has had a major influence on the development of copyright law, particularly copyright law relating to derivative properties. The muddled opinion (not the judges' fault—the opinion is actually clearer than the statute they had to work with) in Burroughs v. Metro-Goldwyn-Mayer, Inc. (2d Cir. 1982) demonstrates exactly how ineptly the entertainment industry (and publishing industry) acted under the 1909 Copyright Act. But Tarzan really does rule the jungle of the 1909 Act. From 1996 through 2000, by my count over 40% of the appellate copyright opinions that concerned the 1909 Act referred directly or indirectly to litigation over Tarzan. Unfortunately, we cannot take refuge in the much simpler, if still muddled, provisions of the 1976 Copyright Act, particularly regarding derivative works.

   The Hogarth decision issued yesterday is a cautionary tale for creators of derivative works, particularly works that might conceivably be works for hire. Interestingly, the Court of Appeals seemed to be highly influenced by a presentation from the Register of Copyright. Such reliance bodes ill for certain other controversial practices in copyright law… such as "file sharing." The gory details are for another time, and another forum. In any event, the critical language actually concerns statutes of limitations:

Even if the filing of an application for registration by an adverse party could start a limitations period, a matter we do not decide, a party cannot be held to have started the limitations period for assertion of its copyright claims by filing its own applications for registration, no matter how erroneous. Recognizing that ERB's work-for-hire "claim" cannot accrue until it has suffered some injury, the Hogarths contended in the District Court that ERB suffered a "self-inflicted injury." Not surprisingly, there is no authority for such a contention.

Slip op. at 30–31 (citations and footnote omitted). Creators should not count upon this position, however, because it creates an implicit circuit split—and may not apply equally to the 1909 and 1976 Acts. Under the 1909 Act, registration was required to assert any aspect of copyright, and copyright was "indivisible." Under the 1976 Act, registration is required only to file suit, and copyrights can be divided. Thus, we're still stuck in the tangled undergrowth while ERB, Inc. swings elegantly through the treetops overhead.